Judgment may not be the goal of a California patent suit

One way to make a profit from an invention is to license its use to others. Universities in California and across the U.S. collect royalties from license holders for patents generated by research.

Universities have been allowed to own patents derived from federal research since 1980. Surveys by the Association of University of Technology Managers indicated universities pocketed about $2 billion every year through patent licensing.

The University of Wisconsin-Madison sued Intel over the use of a technology patent in 2009. The parties reached an undisclosed settlement in the infringement litigation. The same technology prompted another university lawsuit, this time against Apple Inc.

According to the plaintiff, Apple’s iPhone 5S, iPad Air and iPad Mini all contain A7 processors with roots in intellectual property owned by the university.

The Wisconsin Alumni Research Foundation asserts Apple willfully uses a patent developed in 1998 by four university researchers. The school wants a court to validate the patent’s ownership and force Apple to stop infringing.

Legal observers noted the object of many claims is not to end a patent’s use in a product but to gain licensing revenue. The case never gets to trial but settles out of court with terms that forge a licensing agreement. After all, an unused patent isn’t making money for anyone.

A November New York Times article criticized universities for playing passive roles with intellectual property. The article detailed findings of a Brookings Institution study that concluded universities could be capitalizing on patents. Brookings researchers believe schools should promote entrepreneurships within their ranks to gain an ownership-licensing foothold.

Brookings learned just 13 percent of universities doing research currently cleared enough licensing revenue to pay for campus offices that closed the deals.

Plaintiffs must have a clear objective before launching a time consuming and costly lawsuit. You may not have to hold a defendant’s feet to the fire to acquire a lucrative licensing deal.

Source: San Jose Mercury News, “U. of Wisconsin foundation sues Apple over patent” No author given, Feb. 05, 2014